Trademark Cancellation – Lack of Good Faith Intent to Use Trademark

A recent trademark opposition and trademark cancellation involved the case Cervezas Cuauhtemoc Moctezuma SA de CV v. Branden Weaver which addressed a lack of good faith (or bona fide) intent to use a trademark in commerce at the time of filing the trademark application.  Trademark law states that a person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may apply for trademark registration of the trademark.  A trademark applicant’s bona fide intent to use a trademark must reflect an intention that is firm, though it may be contingent on the outcome of an event such as market research or product testing and must reflect an intention to use the trademark in the ordinary course of trade, and not merely reserve a right in a trademark.

The Mexican brewer responsible for “stay thirsty, my friends” successfully opposed and terminated the individual’s attempt to register the mark “STAY HYDRATED MY FRIENDS” for “drinking water; drinking water with vitamins; energy drinks; mineral water; sports drinks in International Trademark Class 32.  Cervezas Cuauhtemoc Moctezum, brewer of Dos Equis, argued that the applicant of “STAY HYDRATED MY FRIENDS” lacked a bona fide intent to use the mark in commerce to identify his goods at the time of filing.  The argument was premised on the grounds of false suggestion of a connection, likelihood of confusion and dilution.

The Court in this case focused on the applicant’s unsupported statement of  intent to use his mark and his lack of good faith – the only documents presented by applicant to support his intent to use the trademark as associated with the international class 32 was a commercially prepared trademark search report..  The Court agreed with the opposer of the mark, Cervezas Cuauhtemoc Moctezum, that there was no genuine dispute of material fact as to applicant’s lack of bona fide intent to use the trademark as of the filing date of the application. Thus, opposer’s motion for summary judgment was granted on its claim based on this lack of good faith intent to use the mark in commerce.